There have been some interesting developments in the Christian Louboutin v. Yves Saint Laurent case (first reported here). Hold on to your seat because it turns into a bumpy ride.
Louboutin is claiming trade-mark infringement and seeking an injunction and damages against Yves Saint Laurent’s use of red shoes with red soles.
Yves Saint Laurent has come back hard seeking to cancel Louboutin’s trade-mark registration upon which the trade-mark infringement claim is based. Yves Saint Laurent is claiming that Christian Louboutin’s trade-mark registration was fraudulently obtained. Yves Saint Laurent claims that as part of the trade-mark registration process Christian Louboutin included a false statement that its use of red soled shoes was substantially exclusive. Yves Saint Laurent claims that this was a false and misleading statement, given that the marketplace demonstrates that other companies use the red soled shoe.
Christian Louboutin sought to dismiss Yves Saint Laurent’s counter-claim to cancel Christian Louboutin’s trade-mark registration on the basis of fraud.
Christian Louboutin then proceeded to seek to obtain a preliminary injunction against Yves Saint Laurent. (A preliminary injunction is a court order that restrains a party from continuing its questionable conduct until the case has been decided. In this matter, Christian Louboutin is asking the court to force Yves Saint Laurent from selling its allegedly infringing shoes until the case has been decided).
As part of its submissions to obtain the preliminary injunction, Christian Louboutin took an interesting position. Christian Louboutin concedes that it is not claiming a monopoly over the color red for soles of shoes, but rather exclusivity over “lacquered red” soles:
“Louboutin’s trademark covers a specific red for outsoles, not the broad spectrum of red hues. Many shades of red and other colors are available for use by any party who wants to produce a shoe, “monochrome” or otherwise, without infringing [Christian Louboutin’s] Red Sole Mark. Even Louboutin’s red color is available for competitors on other, more visible, parts of the shoe”.
This is interesting as Christian Louboutin seems to paint its circle of exclusivity very thinly.
Christian Louboutin also maintains that its red lacquered soles are well-known in the marketplace and have acquired significant secondary meaning through its substantially exclusive use in the marketplace for 19 years and extensive media coverage and celebrity endorsement. Christian Louboutin maintains that competitors in the marketplace that also use red soled shoes are “copyists”, that should not be recognized as legitimate actors that diminish the success of Christian Louboutin’s trade-mark.
Ultimately, Christian Louboutin is pressing the court to grant a preliminary injunction as it sees this case as a possible “flood gate” for other infringers:
Christian Louboutin has a lot riding on this case. It will be interesting to see how this case will unfold. Stay tuned to CanadaFashionLaw.com for regular updates.“Louboutin actively polices the Red Sole Mark to shut down copyists. This task will become impossible if competitors can copy the Red Sole Mark at will, as YSL has done here. Already another competitor has signaled its intent to follow suit. A flood of red soles in high fashion women’s footwear creates the danger that Louboutin’s goodwill, market prominence and fame will be destroyed, thus threatening its entire goodwill.”